The Section 8 window opens on the fifth anniversary of registration and closes on the sixth. This is what goes into the filing, and where refusals come from.
Three components
- A verified declaration that the mark is in use in commerce on the goods and services in the registration.
- A specimen for each class showing that use.
- The fee, per class, plus the grace-period surcharge if filed late.
Specimens are where filings fail
The USPTO is assessing use as it exists now, not as it existed at registration. A specimen that was accepted six years ago can be refused today because the packaging changed, the website was redesigned, or the mark is now displayed differently.
For goods: packaging, labels, tags, or a product page where the mark appears near the item with a means of ordering it. A picture of the product with no mark visible is not a specimen. Advertising is generally not a specimen for goods.
For services: advertising or marketing material showing the mark used in connection with the services, including a web page — provided the page actually describes the services rather than merely displaying the mark.
Gather specimens before the window opens. Discovering that current packaging drops the ® or restyles the mark is a problem with a lead time.
Deleting goods no longer in use
If the mark has stopped being used on part of the specification, those goods must be deleted. A declaration covering goods not in use is a misstatement in a verified filing, and it is the first thing an opponent examines if the registration is later challenged.
Deleting narrows the registration, which feels like a loss. An inaccurate declaration risks the whole thing.
Add Section 15 while you are there
Section 15 becomes available after five years of continuous use, which overlaps this window. Filed together the marginal cost is small, and incontestability removes the most common grounds for attacking the registration later.
If the window has closed
Six months of grace with an extra fee per class. After that, the registration cancels and there is no way back.